Q: What options are open to a patent owner seeking to enforce its rights in your jurisdiction?

A patent infringement suit can be filed with the Market Court, which has exclusive jurisdiction in patent matters at first instance. If the situation is urgent, an application for an injunction can be filed before the patent infringement suit. The court can issue an ex parte injunction within a few days, provided that sufficient grounds are presented.

Q: Are parties obliged to undertake mediation/arbitration before bringing a case before the courts? Is this a realistic alternative to litigation?

No. At present, alternative dispute resolution does not appear to be a realistic alternative to litigation.

Q: Are there specialist patent or IP courts in your jurisdiction? If not, what level of expertise can litigants expect from the courts?

The Market Court, which commenced work in late 2013, is a special court hearing civil IP matters, among other things.

Q: Are validity and infringement dealt with together, or does your country have a bifurcated system?

Under the Market Court Procedure Act, validity and infringement matters are generally handled simultaneously.

Q: Who may represent parties engaged in a dispute?

There are no restrictions other than the conflict of interest stipulations under the local rules of the Finnish Bar Association. However, the representative must have a law degree and be either a member of the Bar Association or a licensed court counsel.

Q: To what extent is pre-trial discovery permitted?

The pre-trial discovery system is not used in Finland. However, a party can request that certain evidence be secured by court order and enforced with the assistance of officials. The applicant must lodge security as stipulated in the special legislation covering such securing of evidence.

Q: Is cross-examination of witnesses allowed during court proceedings? If so, what form does this take?

Cross-examination is permitted according to general procedural rules.

Q: What use of expert witnesses is permitted?

Expert witnesses play a key role in patent proceedings. The expert’s role is usually to draft a written statement and to appear as a witness in the oral hearing. The parties have the right to appoint their expert witnesses freely.

Q: Is the doctrine of equivalents applied by courts in your jurisdiction? If so, what form does this take?

The local courts apply the doctrine of equivalents as stipulated by the European Patent Convention.

Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?

It is hard to draw conclusions on this issue, since few patent matters are filed each month and there is no extensive case law on different types of invention. In recent years most of the cases filed related to pharmaceutical patents; business method and software patents have not been litigated.

Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

Only Supreme Court decisions can be considered binding case law. However, since there are few Supreme Court precedents on patent matters, the parties also refer to appeal court decisions.

Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?

Foreign decisions do not have decisive effect. However, since the Finnish patent legislation was drafted in cooperation with other Nordic countries, some decisions of other Nordic countries – in particular from the supreme courts – are frequently referred to by the Finnish courts. However, decisions from other jurisdictions are not generally given significant weight.

Q: What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

If the case does not involve urgent injunction procedures, delaying tactics are usually based on deadline extensions. During revocation or infringement proceedings, the parties are requested to file their briefs by a deadline set by the court. In such cases a party can request an extension to the deadline, provided that reasonable grounds to support the request exist. The courts usually grant the extension if this is not unreasonable. The opposing party has no way of stopping the extension, as the courts do not usually seek its opinion in this regard. In order to avoid delays, the other party can notify the court of any suspected stalling and request that any extensions be refused. The new system applied by the Market Court appears to allow less room for stalling.

Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

Preliminary injunctions may be granted if infringement is likely to occur, taking into account the urgency of the matter and the advantages and disadvantages for each party.

Q: How much should a litigant budget for in order to take a case through to a decision at first instance?

The costs of patent litigation may vary considerably depending, for example, on the field of the invention and the issues in dispute. At first instance, the costs may range from €40,000 to €300,000.

Q: How long should parties expect to wait for a decision to be handed down at first instance?

The goal set by the Market Court under the new system is to issue a first-instance decision within one year.

Q: To what extent are the winning party’s costs recoverable from the losing party?

The procedural starting point is that the losing party pays the winner’s costs.

Q: What remedies are available to a successful plaintiff?

The main remedies for infringement are an injunction, reasonable compensation for unauthorised use of the patent and compensation fordamages. The law also provides for additional remedies, such as destruction of infringing goods and publication of the court decision.

Q: How are damages awards calculated? Is it possible to obtain punitive damages?

Actual damages are based on proven losses suffered by the patent holder, including lost sales profits and costs that the infringement may have caused. Punitive damages are not available.

Q: Under what circumstances might a court grant a permanent injunction? How often does this happen?

One of the main remedies under the Patents Act is a permanent injunction. If an infringement is confirmed, a permanent injunction will be ordered at the claimant’s request.

Q: Does the losing party at first instance have an automatic right of appeal? If not, under what circumstances might leave to appeal be granted?

An appeal against the first-instance decision may be lodged with the Supreme Court if leave to appeal is granted on the following grounds:

  • A Supreme Court decision is necessary for the application of law in identical or similar cases or the consistency of case law;
  • An error in procedure or other error has occurred which, by virtue of law, requires that the decision be quashed; or
  • There are other weighty reasons to grant leave to appeal.

Q: How long does it typically take for the appellate decision to be handed down?

Since there is little Supreme Court precedent on patent matters, there is no practice on which to base an estimate of appellate proceedings.

Q: Is it possible to take cases beyond the second instance?

No.

Q: To what extent do the courts in your jurisdiction have a reputation to be pro-patentee?

The courts could be characterised as neutral.

Q: Is your jurisdiction a signatory to the London Agreement on Translations?

Finland has signed up to the London Agreement, which was ratified on March 11 2011.

Q: Has your jurisdiction signed the Agreement on the Unified Patent Court? If so, when do you expect it to be ratified?

Yes. Finland ratified the agreement in January 2016.

Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?

The Market Court now has exclusive jurisdiction in IP disputes. It is hoped that the new centralised system will prove fast, effective and high-quality decisions. However, it remains to be seen how these goals will be met.

Petri Eskola

This article first appeared in IAM. For further information please visit www.iam-media.com.